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SUPREME COURT OF THE UNITED STATES
_________________
No. 13–369
_________________
NAUTILUS, INC., PETITIONER v. BIOSIG
INSTRUMENTS, INC.
on writ of certiorari to the united states
court of appeals for the federal circuit
[June 2, 2014]
Justice Ginsburg
delivered the opinion of the Court.
The Patent Act requires
that a patent specification “conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the applicant regards as [the] invention.” 35
U. S. C. §112, ¶2 (2006 ed.) (emphasis added). This case,
involving a heart-rate monitor used with exercise equipment,
concerns the proper reading of the statute’s clarity and precision
demand. According to the Federal Circuit, a patent claim passes the
§112, ¶2 threshold so long as the claim is “amenable to
construction,” and the claim, as construed, is not “insolubly
ambiguous.” 715 F. 3d 891, 898–899 (2013). We conclude that
the Federal Circuit’s formulation, which tolerates some ambiguous
claims but not others, does not satisfy the statute’s definiteness
requirement. In place of the “insolubly ambiguous” standard, we
hold that a patent is invalid for indefiniteness if its claims,
read in light of the specification delineating the patent, and the
prosecution history, fail to inform, with reasonable certainty,
those skilled in the art about the scope of the invention.
Expressing no opinion on the validity of the patent-in-suit,
we remand, instructing the Federal Circuit to
decide the case employing the standard we have prescribed.
I
Authorized by the
Constitution “[t]o promote the Progress of Science and useful Arts,
by securing for limited Times to . . . Inventors the
exclusive Right to their . . . Discoveries,” Art. I,
§8, cl. 8, Congress has enacted patent laws rewarding
inventors with a limited monopoly. “Th[at] monopoly is a property
right,” and “like any property right, its boundaries should be
clear.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535
U. S. 722, 730 (2002) . See also Markman v. Westview
Instruments, Inc., 517 U. S. 370, 373 (1996) (“It has long
been understood that a patent must describe the exact scope of an
invention and its manufacture . . . .”). Thus, when
Congress enacted the first Patent Act in 1790, it directed that
patent grantees file a written specification “containing a
description . . . of the thing or things . . .
invented or discovered,” which “shall be so particular” as to
“distinguish the invention or discovery from other things before
known and used.” Act of Apr. 10, 1790, §2, 1Stat. 110.
The patent laws have
retained this requirement of definiteness even as the focus of
patent construction has shifted. Under early patent practice in the
United States, we have recounted, it was the written specification
that “represented the key to the patent.” Markman, 517 U. S.,
at 379. Eventually, however, patent applicants began to set out the
invention’s scope in a separate section known as the “claim.” See
generally 1 R. Moy, Walker on Patents §4.2, pp. 4–17 to 4–20
(4th ed. 2012). The Patent Act of 1870 expressly conditioned the
receipt of a patent on the inventor’s inclusion of one or more such
claims, described with particularity and distinctness. See Act of
July 8, 1870, §26, 16Stat. 201 (to obtain a patent, the inventor
must “particularly point out and distinctly claim the part,
improvement, or combination which [the inventor] claims as his
invention or discovery”).
The 1870 Act’s
definiteness requirement survives today, largely unaltered. Section
112 of the Patent Act of 1952, applicable to this case, requires
the patent applicant to conclude the specification with “one or
more claims particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his invention.” 35
U. S. C. §112, ¶2 (2006 ed.). A lack of definiteness
renders invalid “the patent or any claim in suit.” §282,
¶2(3).[
1]
II
A
The patent in
dispute, U. S. Patent No. 5,337,753 (’753 patent), issued to
Dr. Gregory Lekhtman in 1994 and assigned to respondent Biosig
Instruments, Inc., concerns a heart-rate monitor for use during
exercise. Previous heart-rate monitors, the patent asserts, were
often inaccurate in measuring the electrical signals accompanying
each heartbeat (electrocardiograph or ECG signals). The inaccuracy
was caused by electrical signals of a different sort, known as
electromyogram or EMG signals, generated by an exerciser’s skeletal
muscles when, for example, she moves her arm, or grips an exercise
monitor with her hand. These EMG signals can “mask” ECG signals and
thereby impede their detection. App. 52, 147.
Dr. Lekhtman’s
invention claims to improve on prior art by eliminating that
impediment. The invention focuses on a key difference between EMG
and ECG waveforms: while ECG signals detected from a user’s left
hand have a polarity opposite to that of the signals detected from
her right hand,[
2] EMG signals
from each hand have the same polar-ity. The patented device works
by measuring equalized EMG signals detected at each hand and then
using circuitry to subtract the identical EMG signals from each
other, thus filtering out the EMG interference.
As relevant here, the
’753 patent describes a heart-rate monitor contained in a hollow
cylindrical bar that a user grips with both hands, such that each
hand comes into contact with two electrodes, one “live” and one
“common.” The device is illustrated in figure 1 of the patent, id.,
at 41, reproduced in the Appendix to this opinion.
Claim 1 of the ’753
patent, which contains the limitations critical to this dispute,
refers to a “heart rate monitor for use by a user in association
with exercise apparatus and/or exercise procedures.” Id., at 61.
The claim “comprise[s],” among other elements, an “elongate member”
(cylindrical bar) with a display device; “electronic circuitry
including a difference amplifier”; and, on each half of the
cylindrical bar, a live electrode and a common electrode “mounted
. . . in spaced relationship with each other.”
Ibid.[
3] The claim sets forth
additional elements, including that the cylindrical bar is to be
held in such a way that each of the user’s hands “contact[s]” both
electrodes on each side of the bar. Id., at 62. Further, the EMG
signals detected by the two electrode pairs are to be “of
substan-tially equal magnitude and phase” so that the difference
amplifier will “produce a substantially zero [EMG] signal” upon
subtracting the signals from one another. Ibid.
B
The dispute between
the parties arose in the 1990’s, when Biosig allegedly disclosed
the patented technology to StairMaster Sports Medical Products,
Inc. According to Biosig, StairMaster, without ever obtaining a
license, sold exercise machines that included Biosig’s patented
technology, and petitioner Nautilus, Inc., continued to do so after
acquiring the StairMaster brand. In 2004, based on these
allegations, Biosig brought a patent infringement suit against
Nautilus in the U. S. District Court for the Southern District
of New York.
With Biosig’s lawsuit
launched, Nautilus asked the U. S. Patent and Trademark Office
(PTO) to reexamine the ’753 patent. The reexamination proceedings
centered on whether the patent was anticipated or rendered obvious
by prior art—principally, a patent issued in 1984 to an inventor
named Fujisaki, which similarly disclosed a heart-rate monitor
using two pairs of electrodes and a difference amplifier.
Endeavoring to distinguish the ’753 patent from prior art, Biosig
submitted a declaration from Dr. Lekhtman. The declaration
attested, among other things, that the ’753 patent sufficiently
informed a person skilled in the art how to configure the detecting
electrodes so as “to produce equal EMG [signals] from the left and
right hands.” Id., at 160. Although the electrodes’ design
variables—including spacing, shape, size, and material—cannot be
standardized across all exercise machines, Dr. Lekhtman explained,
a skilled artisan could undertake a “trial and error” process of
equalization. This would entail experimentation with different
electrode configurations in order to optimize EMG signal
cancellation. Id., at 155–156, 158.[
4] In 2010, the PTO issued a determination confirming the
patentability of the ’753 patent’s claims.
Biosig thereafter
reinstituted its infringement suit, which the parties had
voluntarily dismissed without prejudice while PTO reexamination was
underway. In 2011, the District Court conducted a hearing to
determine the proper construction of the patent’s claims, see
Markman v. Westview Instruments, Inc., 517 U. S. 370 (1996)
(claim construction is a matter of law reserved for court
decision), including the claim term “in spaced relationship with
each other.” According to Biosig, that “spaced relationship”
referred to the distance between the live electrode and the common
electrode in each electrode pair. Nautilus, seizing on Biosig’s
submissions to the PTO during the reexamination, maintained that
the “spaced relationship” must be a distance “greater than the
width of each electrode.” App. 245. The District Court ultimately
construed the term to mean “there is a defined relationship between
the live electrode and the common electrode on one side of the
cylindrical bar and the same or a different defined relationship
between the live electrode and the common electrode on the other
side of the cylindrical bar,” without any reference to the
electrodes’ width. App. to Pet. for Cert. 43a–44a.
Nautilus moved for
summary judgment, arguing that the term “spaced relationship,” as
construed, was indefinite under §112, ¶2. The District Court
granted the motion. Those words, the District Court concluded, “did
not tell [the court] or anyone what precisely the space should be,”
or even supply “any parameters” for determining the appropriate
spacing. Id., at 72a.
The Federal Circuit
reversed and remanded. A claim is indefinite, the majority opinion
stated, “only when it is ‘not amenable to construction’ or
‘insolubly ambiguous.’ ” 715 F. 3d 891, 898 (2013)
(quoting Datamize, LLC v. Plumtree Software, Inc., 417 F. 3d
1342, 1347 (CA Fed. 2005)). Under that standard, the majority
determined, the ’753 patent survived indefiniteness review.
Considering first the “intrinsic evidence”—i.e., the claim
language, the specification, and the prosecution history—the
majority discerned “certain inherent parameters of the claimed
apparatus, which to a skilled artisan may be sufficient to
understand the metes and bounds of ‘spaced relationship.’ ”
715 F. 3d, at 899. These sources of meaning, the majority
explained, make plain that the distance separating the live and
common electrodes on each half of the bar “cannot be greater than
the width of a user’s hands”; that is so “because claim 1 requires
the live and common electrodes to independently detect electrical
signals at two distinct points of a hand.” Ibid. Furthermore, the
major-ity noted, the intrinsic evidence teaches that this distance
cannot be “infinitesimally small, effectively merging the live and
common electrodes into a single electrode with one detection
point.” Ibid. The claim’s functional provisions, the majority went
on to observe, shed additional light on the meaning of “spaced
relationship.” Surveying the record before the PTO on
reexamination, the majority concluded that a skilled artisan would
know that she could attain the indicated functions of equalizing
and removing EMG signals by adjusting design variables, including
spacing.
In a concurring
opinion, Judge Schall reached the majority’s result employing “a
more limited analysis.” Id., at 905. Judge Schall accepted the
majority’s recitation of the definiteness standard, under which
claims amenable to construction are nonetheless indefinite when
“the construction remains insolubly ambiguous.” Ibid. (internal
quotation marks omitted). The District Court’s construction of
“spaced relationship,” Judge Schall maintained, was sufficiently
clear: the term means “there is a fixed spatial relationship
between the live electrode and the common electrode” on each side
of the cylindrical bar. Ibid. Judge Schall agreed with the majority
that the intrinsic evidence discloses inherent limits of that
spacing. But, unlike the majority, Judge Schall did not “presum[e]
a functional linkage between the ‘spaced relationship’ limitation
and the removal of EMG signals.” Id., at 906. Other limitations of
the claim, in his view, and not the “ ‘spaced relationship’
limitation itself,” “included a functional requirement to remove
EMG signals.” Ibid.
We granted certiorari,
571 U. S. ___ (2014), and now vacate and remand.
III
A
Although the parties
here disagree on the dispositive question—does the ’753 patent
withstand definiteness scrutiny—they are in accord on several
aspects of the §112, ¶2 inquiry. First, definiteness is to be
evaluated from the perspective of someone skilled in the relevant
art. See, e.g., General Elec. Co. v. Wabash Appliance Corp., 304
U. S. 364, 371 (1938) . See also §112, ¶1 (patent’s
specification “shall contain a written description of the
invention, and of the manner and process of making and using it, in
such full, clear, concise, and exact terms as to enable any person
skilled in the art to which it pertains, or with which it is most
nearly connected, to make and use the same” (emphasis added)).
Second, in assessing definiteness, claims are to be read in light
of the patent’s specification and prosecution history. See, e.g.,
United States v. Adams, 383 U. S. 39 –49 (1966)
(specification); Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
Co., 535 U. S. 722, 741 (2002) (prosecution history). Third,
“[d]efiniteness is measured from the viewpoint of a person skilled
in [the] art at the time the patent was filed.” Brief for
Respondent 55 (emphasis added). See generally E. Manzo, Patent
Claim Construction in the Federal Circuit §0.2, p. 9 (2014)
(“Patent claims . . . should be construed from an
objective perspective of a [skilled artisan], based on what the
applicant actually claimed, disclosed, and stated during the
application process.”).
The parties differ,
however, in their articulations of just how much imprecision §112,
¶2 tolerates. In Nautilus’ view, a patent is invalid when a claim
is “ambiguous, such that readers could reasonably interpret the
claim’s scope differently.” Brief for Petitioner 37. Biosig and the
Solicitor General would require only that the patent provide
reasonable notice of the scope of the claimed invention. See Brief
for Respondent 18; Brief for United States as Amicus Curiae
9–10.
Section 112, we have
said, entails a “delicate balance.” Festo, 535 U. S., at 731.
On the one hand, the definiteness requirement must take into
account the inherent limitations of language. See ibid. Some
modicum of uncertainty, the Court has recognized, is the “price of
ensuring the appropriate incentives for innovation.” Id., at 732.
One must bear in mind, moreover, that patents are “not addressed to
lawyers, or even to the public generally,” but rather to those
skilled in the relevant art. Carnegie Steel Co. v. Cambria Iron
Co., 185 U. S. 403, 437 (1902) (also stating that “any
description which is sufficient to apprise [steel manufacturers] in
the language of the art of the definite feature of the invention,
and to serve as a warning to others of what the patent claims as a
monopoly, is sufficiently definite to sustain the
patent”).[
5]
At the same time, a
patent must be precise enough to afford clear notice of what is
claimed, thereby “ ‘appris[ing] the public of what is still
open to them.’ ” Markman, 517 U. S., at 373 (quoting
McClain v. Ortmayer, 141 U. S. 419, 424 (1891) ).[
6] Otherwise there would be “[a] zone
of uncertainty which enterprise and experimentation may enter only
at the risk of infringement claims.” United Carbon Co. v. Binney
& Smith Co., 317 U. S. 228, 236 (1942) . And absent a
meaningful definiteness check, we are told, patent applicants face
powerful incentives to inject ambigu-ity into their claims. See
Brief for Petitioner 30–32 (citing patent treatises and drafting
guides). See also Federal Trade Commission, The Evolving IP
Marketplace: Aligning Patent Notice and Remedies With Competition
85 (2011) (quoting testimony that patent system fosters “an
incentive to be as vague and ambiguous as you can with your claims”
and “defer clarity at all costs”).[
7] Eliminating that temptation is in order, and “the
patent drafter is in the best position to resolve the ambiguity in
. . . patent claims.” Halliburton Energy Servs., Inc. v.
M–I LLC, 514 F. 3d 1244, 1255 (CA Fed. 2008). See also Hormone
Research Foundation, Inc. v. Genentech, Inc., 904 F. 2d 1558,
1563 (CA Fed. 1990) (“It is a well-established axiom in patent law
that a patentee is free to be his or her own lexicographer
. . . .”).
To determine the proper
office of the definiteness command, therefore, we must reconcile
concerns that tug in opposite directions. Cognizant of the
competing concerns, we read §112, ¶2 to require that a patent’s
claims, viewed in light of the specification and prosecution
history, inform those skilled in the art about the scope of the
invention with reasonable certainty. The definiteness requirement,
so understood, mandates clarity, while recognizing that absolute
precision is unattainable. The standard we adopt accords with
opinions of this Court stating that “the certainty which the law
requires in patents is not greater than is reasonable, having
regard to their subject-matter.” Minerals Separation, Ltd. v. Hyde,
242 U. S. 261, 270 (1916) . See also United Carbon, 317
U. S., at 236 (“claims must be reasonably clear-cut”);
Markman, 517 U. S., at 389 (claim construction calls for “the
necessarily sophisticated analysis of the whole document,” and may
turn on evaluations of expert testimony).
B
In resolving
Nautilus’ definiteness challenge, the Fed-eral Circuit asked
whether the ’753 patent’s claims were “amenable to construction” or
“insolubly ambiguous.” Those formulations can breed lower court
confusion,[
8] for they lack the
precision §112, ¶2 demands. It cannot be sufficient that a court
can ascribe some meaning to a patent’s claims; the definiteness
inquiry trains on the understanding of a skilled artisan at the
time of the patent application, not that of a court viewing matters
post hoc. To tolerate imprecision just short of that rendering
a claim “insolubly ambiguous” would diminish the definiteness
requirement’s public-notice function and foster the
innovation-discouraging “zone of uncertainty,” United Carbon, 317
U. S., at 236, against which this Court has warned.
Appreciating that
“terms like ‘insolubly ambiguous’ may not be felicitous,” Brief for
Respondent 34, Biosig argues the phrase is a shorthand label for a
more probing inquiry that the Federal Circuit applies in practice.
The Federal Circuit’s fuller explications of the term “insolubly
ambiguous,” we recognize, may come closer to tracking the statutory
prescription. See, e.g., 715 F. 3d, at 898 (case below) (“[I]f
reasonable efforts at claim construction result in a definition
that does not provide sufficient particularity and clarity to
inform skilled artisans of the bounds of the claim, the claim is
insolubly ambiguous and invalid for indefiniteness.” (internal
quotation marks omitted)). But although this Court does not
“micromanag[e] the Federal Circuit’s particular word choice” in
applying patent-law doctrines, we must ensure that the Federal
Circuit’s test is at least “probative of the essential inquiry.”
Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U. S.
17, 40 (1997) . Falling short in that regard, the expressions
“insolubly ambiguous” and “amenable to construction” permeate the
Federal Circuit’s recent decisions concerning §112, ¶2’s
requirement.[
9] We agree with
Nautilus and its amici that such terminology can leave courts and
the patent bar at sea without a reliable compass.[
10]
IV
Both here and in the
courts below, the parties have advanced conflicting arguments as to
the definiteness of the claims in the ’753 patent. Nautilus
maintains that the claim term “spaced relationship” is open to
multiple interpretations reflecting markedly different
understandings of the patent’s scope, as exemplified by the
disagreement among the members of the Federal Circuit
panel.[
11] Biosig responds
that “spaced relationship,” read in light of the specification and
as illustrated in the accompanying drawings, delineates the
permissible spacing with sufficient precision.
“[M]indful that we are
a court of review, not of first view,” Cutter v. Wilkinson, 544
U. S. 709 , n. 7 (2005), we decline to apply the standard
we have announced to the controversy between Nautilus and Biosig.
As we have explained, the Federal Circuit invoked a standard more
amorphous than the statutory definiteness requirement allows. We
therefore follow our ordinary practice of remanding so that the
Court of Appeals can reconsider, under the proper standard, whether
the relevant claims in the ’753 patent are sufficiently definite.
See, e.g., Johnson v. California, 543 U. S. 499, 515 (2005) ;
Gasperini v. Center for Humanities, Inc., 518 U. S. 415, 438
(1996) .
* * *
For the reasons stated,
we vacate the judgment of the United States Court of Appeals for
the Federal Circuit and remand the case for further proceedings
consistent with this opinion.
It is so ordered.
APPENDIX
Patent No. 5,337,753, Figure 1
